The TTAB Issued 35 Precedential Opinions in 2023

The Board issued 34 precedential opinions in calendar 2023, a total slightly lower than in recent years. A number of trademark practitioners believe that the TTAB should be issuing more precedential decisions. The Board has made available a form for nominating a Board decision as precedential. (link here). [Good luck with that.]

Section 2(d) - Likelihood of Confusion:

• Precedential No. 34: TTAB Dismisses Monster Energy's Section 2(d) Claim On Summary Judgment Due to DIssimilarity of Design Marks
• Precedential No. 29: After an Exhausting 2(d) Analysis, TTAB Finds HME (Stylized) Confusable with KME for Building Products
• Precedential No. 27: TTAB Renders Split Decision in Appeal From Section 2(d) Refusal of IMPACT for Various Healthcare Services
• Precedential No. 12: TTAB Hands Win to MLBPA and Aaron Judge In Opposition to Judicial-Themed Trademarks for Clothing
• Precedential No. 5: TTAB Finds ICE MONSTER & Design Confusable With MONSTER ENERGY for Restaurant Services

Section 2(e)(1) - Mere Misdescriptiveness:

• Precedential No. 1: TTAB Affirms Mere Descriptiveness Refusal of "DXPORTAL" for an Internet Portal Providing Drug Prescription Information

Inherent/Acquired Distinctiveness:

• Precedential No. 16: TTAB Finds Guitar Shape for Hotel to be Inherently Distinctive
• Precedential No. 17: TTAB Finds Hotel Shape Not Inherently Distinctive and Lacking in Acquired Distinctiveness

Abandonment:

• Precedential No. 31: De Minimis Sales of Amplifiers Over Six-Year Period Leads to Cancellation of "CS" Registration for Abandonment

Failure-to-Function:

• Precedential No. 33: TTAB Reverses Failure-to-Function Refusal of "FOLLOW THE LEADER" for Credit Card and Travel Services
• Precedential No. 23: As Used on Applicant's Specimen, Depiction of Computer Game Character Fails to Function as a Trademark
• Precedential No. 22: TTAB Affirms "Single Work" Refusal of Book Title, Finding Translation Not a Separate Work
• Precedential No. 18: BOYS WORLD Functions Not Only as the Name of a Musical Group, But Also as a Trademark
• Precedential No. 7: TTAB Reverses Failure-to-Function Refusal of Lizzo's "100% THAT BITCH" for Clothing Items

Genericness

• Precedential No. 8: TTAB Affirms Genericness Refusal of "NF-LIGHT" for Specimen Analysis Kits For Detecting Neurological Markers

Goods in Trade:

• Precedential No. 11: TTAB Reverses Six "Goods In Trade" Refusals for NY Times Non-Syndicated Column Titles

Illegal Use:

• Precedential No. 15: Finding Essential Oil Dispensers to be Illegal Drug Paraphernalia, TTAB Affirms Refusal of Two Proposed Marks

Laches:

• Precedential No. 19: Laches Based on Expired Registration Saves EVOGUE from Part of VOGUE's Confusion and Dilution Claims

Nonuse:

• Precedential No. 3: Rejecting Motion to Expand Identification of Goods, TTAB Sustains EN-D-FENDER Opposition for Nonuse

Ownership:

• Precedential No. 13: TTAB Allows Cancellation Respondent to Correct Registration Ownership

Specimens of Use:

• Precedential No. 20: Deeming Duracell's In-Store Sound Mark a Display Associated With the Goods, TTAB Reverses Specimen Refusal
• Precedential No. 9: Business Card Specimen Does Not Prove Use of Collective Membership Mark, Says TTAB

Entitlement to a Statutory Cause of Action:

• Precedential No. 14: TTAB Dismisses RAPUNZEL Opposition: Professor Failed to Prove Entitlement to a Cause of Action
• Precedential No. 4: Foreign Cancellation Petitioner Fails to Meet Lexmark Test for "Standing" But TTAB Allows Time to Amend Petition

Discovery/Evidence/Procedure:

• Precedential No. 35: TTAB Grants Motion to Sever Permissive Counterclaim from Cancellation Proceeding
• Precedential No. 32: No Preclusive Effect in Cancellation Proceeding if Challenged Registration Survives Reexamination or Expungement
• Precedential No. 30: TTAB Grants Motion for Leave to Take Foreign Discovery Depositions by Videoconference
• Precedential No. 28: TTAB Gives Opposer Leave to Correct Its Botched Notice of Reliance and Testimony Declaration
• Precedential No. 26: Listing of Application on ESTTA Cover Sheet Suffices for Claim of Common Law Rights in Opposition to Section 66(a) Application
• Precedential No. 25: TTAB Deems Grace Period Petition for Cancellation Moot When Registrant Failed to Renew
• Precedential No. 24: Claim for Violation of Section 10 "Anti-Assignment" Provision Is Time-Barred by Section 14
• Precedential No. 21: TTAB Rules That Sur-Sur-Rebuttal Expert Reports Are Never Permitted
• Precedential No. 10: TTAB Confirms that Once Opposer's Mark is Registered, Priority is No Longer an Issue

Prosecution Issues:

• Precedential No. 2: TTAB Upholds Refusal to Register ZHIMA Absent an English Translation ("Sesame")

Text Copyright John L. Welch 2023.